{"id":27561,"date":"2022-11-18T10:20:17","date_gmt":"2022-11-18T09:20:17","guid":{"rendered":"https:\/\/www.arqis.com\/?post_type=blog&p=27561"},"modified":"2024-07-16T09:52:28","modified_gmt":"2024-07-16T07:52:28","slug":"metaverse-blog-6-registration-and-protection-of-trademarks","status":"publish","type":"blog","link":"https:\/\/www.arqis.com\/en\/arqis-blog\/metaverse-blog-6-anmeldung-und-verteidigung-von-marken\/","title":{"rendered":"Metaverse Blog-Serie: Nr. 6 \u2013 Anmeldung und Verteidigung von Marken"},"content":{"rendered":"
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\n Metaverse Blog Series: No. 6 <\/div>\n

Registration and Protection of Trademarks<\/h1>\n <\/div>\n
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Registration and Protection of Trademarks<\/a><\/div>\n
Themen<\/div>\n
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Teilen:<\/div>\n <\/i><\/a>\n <\/i><\/a>\n <\/i><\/a>\n <\/i><\/a>\n <\/div>\n <\/div>\n <\/div>\n <\/section> <\/section>\n\n
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\n 18. November 2022 <\/h3>\n

In the metaverse, with its immersive technologies, new, exciting opportunities are emerging to promote your own goods and services. This trend is not bypassing even the large corporations. Many companies want to take advantage of the opportunity to advertise their brands on metaverse platforms as early adopters.<\/p>\n

But to what extent is German and European trademark law already prepared for the metaverse, and what special features need to be considered when registering and defending trademarks in the metaverse? Are companies in the metaverse completely defenseless without corresponding trademarks?<\/p>\n

In this article, we will take a look at the most important legal aspects of trademark law and explain what needs to be considered when applying for and protecting trademarks in the metaverse, based on specific examples from practice.<\/p>\n<\/div>\n <\/div>\n <\/div>\n <\/div>\n <\/section>\n\n<\/div>\n\n\n\n\n\n\n

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\n CORPORATIONS DISCOVER THE METAVERSE <\/div>\n <\/div>\n <\/div>\n
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Particularly younger consumers are spending more and more of their time in virtual spaces such as Roblox or Fortnite. However, these gaming platforms not only satisfy the urge to play games but are also digital forums in which players can exchange ideas. Many of the currently most successful computer games are available for free and are financed entirely through the purchase of virtual goods.<\/p>\n

The purchase of virtual goods on these platforms is creating a separate industry with significant potential. This is also demonstrated by collaborations such as the one between Dolce & Gabbana and the NFT marketplace UNXD. The fashion company auctioned off several items of clothing on the platform which could be purchased both as a \u201cphysical\u201d item and as an NFT, as well as the NFT of a completely digital piece of jewelry, for the equivalent of 5 million euros in total.<\/p>\n

In addition to selling virtual goods as NFTs, the metaverse platforms also function as advertising platforms for selling goods in the physical world. Since the platforms are not tied to the physical boundaries of the analog world, they provide maximum freedom of design for the placement of advertising. In the metaverse, for example, a fashion company\u2019s new sneaker can float in the virtual sky in a giant 3-D animation and be admired by millions of users around the world at the same time.<\/p>\n

Some well-known brands are already taking advantage of these advertising opportunities. Pioneers in this regard are for example Nike, which has developed its own video game on the Roblox platform called\u00a0Nikeland.<\/a>\u00a0Balenciaga, which with\u00a0Afterworld<\/a>\u00a0has created its own computer game away from the established platforms, is taking a slightly different approach. Events such as the\u00a0Metaverse Fashion Week<\/a>\u00a0by Decentraland, where participants can buy wearable NFTs, are also gaining in importance.<\/p>\n <\/div>\n <\/div>\n <\/div>\n <\/section>\n<\/div>\n\n\n

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\n \u201cGOLD RUSH\u201d IN THE METAVERSE \u2013 TRADEMARK INFRINGEMENTS GUARANTEED <\/div>\n <\/div>\n <\/div>\n
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As in the physical world, one is not immune to trademark infringement in the metaverse. This can be seen, for example, in the recent cases of unauthorized digital goods being traded as NFTs and thereby infringing registered trademark rights.<\/p>\n

One of the most prominent examples of this is the \u201cMetaBirkins<\/em>\" case in the U.S. (mark infringement in the metaverse. (Herm\u00e8s International et al. v Mason Rothschild, 22-cv-00384 (SDNY)),<\/em>in which the fashion company Herm\u00e8s sued the artist Rothschild for creating and commercializing about 100 NFTs in the metaverse that were very similar to the famous Birkin bag, which he sold as \u201cMetaBirkins<\/em>\u201d \u2013 NFTs for over $1 million. The court\u2019s decision is still pending, but the result will most likely be considered as a landmark decision in the field of trade<\/p>\n

In a similar case (Nike Inc. v StockX LLC, 22-cv-983 (SDNY)<\/em>), Nike sued the metaverse marketplace StockX for offering NFTs of shoes which were inspired by physical versions of popular Nike sneakers. This litigation is also taking place in U.S. courts and is still pending.<\/p>\n <\/div>\n <\/div>\n <\/div>\n <\/section>\n<\/div>\n\n\n

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\n PROTECTION USING AN INTERNATIONALLY RECOGNIZED CLASSIFICATION SYSTEM <\/div>\n <\/div>\n <\/div>\n
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So how can trademark owners ensure that their trademarks are protected in the digital world?<\/p>\n

There is a particularly high level of trademark protection against the use of signs that are identical to the trademark and are used for a product or service for which the trademark is registered (so-called double identity). Only under certain conditions can a trademark also be protected against the use of a similar sign for similar goods\/services. In addition, only trademarks with a particularly high reputation receive additional protection against the exploitation of reputation.<\/p>\n

The protection provided for a trademark is therefore primarily determined by the goods and services for which it has been registered in the relevant trademark offices. Most trademark offices worldwide use a trademark classification system for this purpose, which divides similar goods or services into 45 different classes using the so-called \u201cNice Classification\u201d.<\/p>\n <\/div>\n <\/div>\n <\/div>\n <\/section>\n<\/div>\n\n\n

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\n REGISTERING TRADEMARKS FOR THE METAVERSE \u2013 WHICH CLASSES ARE THE RIGHT ONES? <\/div>\n <\/div>\n <\/div>\n
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EU trademarks for virtual goods must be registered in Class 9, which is relevant for information technology. This was stated by the European Union Intellectual Property Office (EUIPO), which is responsible for the examination and protection of EU trademarks.<\/p>\n

This requires the content to which the goods refer to be specified in more detail. For example, the term \u201cdownloadable virtual goods\u201d<\/em>, is unspecific according to the EUIPO, while terms such as \u201cvirtual clothing<\/em>\u201d are registrable in Class 9. A digital downloadable piece of clothing which is authenticated by an NFT should be specified accordingly as \u201cdownloadable clothing authenticated by NFT\u201d.<\/p>\n

Complementary services should be registered in the Classes 35 (e.g., \u201cretail services relating to virtual, non-downloadable goods\u201d)<\/em>, 36 (e.g., \u201cfinancial services, including digital payment services<\/em>\u201d) and 41 (e.g., \u201deducational and entertainment services in virtual environments, non-downloadable<\/em>\u201d) and 42 (e.g., for \u201ctechnical services relating to virtual goods and NFTs\u201d; \u201csoftware as a service\u201d)<\/em>\u201c; \u201eSoftware as a Service<\/em>).<\/p>\n

Some companies have already acted here to secure their protection in advance. This is illustrated by the following examples of trademark applications related to the metaverse:<\/p>\n